DaimlerChrysler AG v. Denis A Fedorov
Claim Number: FA0711001106046
Complainant is DaimlerChrysler AG (“Complainant”), represented by Jan
Zecher of Lovells LLP, Alstertor 21,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue is <daimler-bank.com>, <daimler-benzag.com>,
and <mercedes-bank.com>, registered with
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 2, 2007; the National Arbitration Forum received a hard copy of the Complaint November 5, 2007.
On November
6, 2007, Ano Regional Network Information
Center d/b/a Ru-Center confirmed by e-mail to the National Arbitration
Forum that the <daimler-bank.com>, <daimler-benzag.com>,
and <mercedes-bank.com> domain names are registered with Ano Regional Network Information Center d/b/a
Ru-Center and that Respondent is the current registrant of the names.
On November 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 29, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@daimler-bank.com, postmaster@daimler-benzag.com, and postmaster@mercedes-bank.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 7, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <daimler-bank.com>, <daimler-benzag.com>, and <mercedes-bank.com>, are confusingly similar to Complainant’s DAIMLER and MERCEDES marks.
2. Respondent has no rights to or legitimate interests in the <daimler-bank.com>, <daimler-benzag.com>, and <mercedes-bank.com> domain names.
3. Respondent registered and used the <daimler-bank.com>, <daimler-benzag.com>, and <mercedes-bank.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DaimlerChrysler AG, has sold millions of automobiles annually over the past ten years under the MERCEDES and DAIMLER marks. The marks have been used by Complainant and its legal predecessors for more than a century. In addition, Complainant’s financial services department has become a leading contender in the financial services industry by providing tailor-made leasing and financing solutions to promote vehicle sales. Complainant registered the DAIMLER mark with the German Patent and Trademark Office on December 4, 1899 (Reg. No. 41,127), with the European Office for Harmonization in the Internal Market December 1, 1998 (Reg. No. 140,012), and with the World Intellectual Property Organization on September 29, 1979 (Reg. No. 447,763). Complainant registered the MERCEDES mark with the German Patent and Trademark Office November 23, 1911 (Reg. No. 151,574), with the European Office for Harmonization in the Internal Market November 3, 2000 (Reg. No. 139,998), and with the World Intellectual Property Organization September 29, 1979 (Reg. No. 447,764).
Respondent registered the <daimler-bank.com> domain name March 30, 2007, the <daimler-benzag.com> domain name April 5, 2007, and the <mercedes-bank.com> domain name April 5, 2007. The websites that resolve from the disputed domain names advertise competing products. Respondent has attempted to sell the disputed domain names.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant registered the DAIMLER and MERCEDES marks with the German Patent and Trademark Office, the European Office for Harmonization in the Internal Market, and the World Intellectual Property Organization. Therefore, Complainant has established rights to the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
The <daimler-bank.com>, <daimler-benzag.com>, and <mercedes-bank.com> domain names are confusingly similar to Complainant’s DAIMLER and MERCEDES marks pursuant to Policy ¶ 4(a)(i). The addition of the generic term “bank” to Complainant’s marks does not sufficiently distinguish the <daimler-bank.com> and <mercedes-bank.com> domain names from the DAIMLER and MERCEDES marks because the term describes an aspect of Complainant’s business. Further, the addition of a hyphen to Complainant’s marks is insufficient to distinguish the disputed domain names from Complainant’s mark. Regarding the <daimler-benzag.com> domain name, “AG” is the official abbreviation of the term “Aktiengesellschaft” which means stock corporation in German. Therefore, Respondent’s use of the term “ag” in the <daimler-benzag.com> domain name does not distinguish the disputed domain name from Complainant’s DAIMLER mark. Moreoever, the addtion of the term “benz” to the <daimler-benzag.com> domain name does not distinguish the diputed domain name from the DAIMLER mark because “benz” refers to another aspect of Complainant’s business. Finally, because all registered domain names are required to have a top-level domain, Respondent’s addition of the generic top-level domain (“gTLD”) “.com” to all three disputed domain names does not distinguish the <daimler-bank.com>, <daimler-benzag.com>, and <mercedes-bank.com> domain names from the DAIMLER and MERCEDES marks under Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant)
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent has no rights to nor legitimate interests in the <daimler-bank.com>, <daimler-benzag.com>, and <mercedes-bank.com> domain names. Complainant must first present a prima facie case establishing that Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant has met the burden and made a prima facie case supporting the assertion that Respondent lacks rights and legitimate interests, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has demonstrated that Respondent lacks rights and legitimate interests in the disputed domain names, and thus has made a prima facie case pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
In such circumstances, the Panel is permitted to presume
that Respondent lacks all rights and legitimate interests because Respondent
failed to answer the Complaint. See Do
the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(“Failure of a respondent to come forward to [contest complainant’s
allegations] is tantamount to admitting the truth of complainant’s assertions
in this regard.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30,
2002) (“[B]ased on Respondent's failure to respond, it is presumed that
Respondent lacks all rights and legitimate interests in the disputed domain
name.”). However, the Panel
examines all evidence in the record to determine if Respondent has rights or
legitimate interests under Policy ¶ 4(c).
In that regard the Panel notes that Respondent filed an untimely
communication that did not constitute a formal response, was not timely filed,
and will not filed pursuant to the Rules.
Preferring substance over a procedural default, the Panel reviewed this
material as well to determine if anything before the Panel tended to show that
Respondent had rights to or legitimate interests in the disputed domain
names. The material before the
Arbitration did not show that Respondent has rights to or legitimate interests
in the disputed domain names.
Complainant also contends that Respondent has never been authorized to use the DAIMLER and MERCEDES marks, and has never been and is not commonly known by the disputed domain names. Furthermore, the WHOIS information does not indicate that Respondent is commonly known by the disputed domain names. The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
In addition, Respondent’s websites that resolve from the disputed domain names advertise competing products, presumably for Respondent’s own financial gain. As a result, the Panel finds that Respondent has not made a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Moreover, Respondent’s offer to sell the disputed domain names, demonstrates Respondent’s lack of rights and legitimate interests in the disputed domain names under Policy ¶ (a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleged that Respondent registered and is
using the disputed domain names in bad faith by seeking to attract, for
commercial gain, Internet users seeking Complainant’s services to Respondent’s
websites. The disputed domain names are
capable of creating confusion with the DAIMLER and MERCEDES marks as to the
source, sponsorship, affiliation, or endorsement of the competing products advertised
on Respondent’s websites that resolve from the disputed domain names. The Panel finds that this supports findings
of bad faith registration and use under Policy ¶ 4(b)(iv).
Furthermore, the Panel finds that Respondent’s use of the
disputed domain names to advertise competing products and services constitutes
bad faith registration and use under Policy ¶ 4(b)(iii). See
Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001)
(finding that, given the competitive relationship between the complainant and
the respondent, the respondent likely registered the contested domain name with
the intent to disrupt the complainant's business and create user confusion); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Finally, the Panel finds that Respondent’s offer to sell the disputed domain names demonstrates bad faith use and registration under Policy ¶ (b)(i). See See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).
The Panel finds that Complainant
satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <daimler-bank.com>, <daimler-benzag.com>, and <mercedes-bank.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 21, 2007.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum